EU Trade Mark Reforms Come into Force - Time to Review Your Specifications

Following several years of discussion on proposed reforms to trade mark law in the EU, a new Trade Mark Regulation comes into force in the EU today, 23 March 2016.  The reforms also impact on the laws of EU Member States, who have three years to implement a new Trade Mark Directive into their national laws.

From today, the Office for Harmonisation in the Internal Market (OHIM) will be known as the European Union Intellectual Property Office (EUIPO), Community Trade Marks (CTMs) will be known as European Union Trade Marks (EUTMs) and various other changes come into effect.

Six Months to Amend Specifications Containing Class Headings

Under the new rules, trade mark proprietors are being given a one-off opportunity to amend the specifications of their EUTMs.

Why?

The reforms clarify the approach to the use of class headings in trade mark specifications.  All specifications, including those that cover a class heading, will now be interpreted as covering all goods/services covered by a literal interpretation of the terms therein.  Goods/services which fall within the class in question but are not covered by a literal interpretation will not be included.

This is contrary to previous practice where class headings were effectively deemed to cover all goods/services in the class.

As such, proprietors of EUTMs which were filed before 22 June 2012 and which cover entire Nice class headings have been given until 23 September 2016 to state whether, by using the class heading(s), they intended to cover goods/services which extend beyond such a literal interpretation and, if so, to amend their specification to explicitly include such goods/services.

Why is it Important?

The six month period not only provides EUTM owners with the opportunity to ensure that they do not suffer any loss in protection as a result of the change in practice, but also effectively offers a one-off opportunity to update the list of goods/services where this would otherwise normally be precluded as a broadening of the specification.

What do I need to do?

Owners of existing EUTMs should consider carefully whether the change might affect any of their registrations.  We can offer full advice and assistance in reviewing your trade mark portfolios and maximising your protection.

Other Changes

Amongst the other key changes brought in by the reforms are:

Removal of Graphical Representation Requirement

The requirement that trade marks must be capable of being represented graphically has been removed, allowing applicants to file e.g. sound or video files as a valid means of representing a sound or motion mark.

No More “Three for the Price of One”

The basic application fee previously covered up to three classes of goods/services.  The new (reduced) basic fee now covers only one class of goods/services, with each additional class incurring a further fee.

Greater Protection against Infringing Goods in Transit

Trade mark proprietors are now able to prevent the transit of infringing goods through the EU, unless the trade mark proprietor would not be entitled to prevent the marketing of the goods in the country of final destination.

Own Name Defence

Defendants in infringement proceedings are currently able to rely on the “own name” defence to infringement, whether or not the defendant is a natural or legal person, i.e. whether or not the name used is a personal or company name.  The defence is now expressly limited to use of personal names only.

Non-use as a Defence in Infringement Proceedings

A defendant may now require the owner of EUTMs registered for more than five years to provide proof of use in infringement proceedings, removing the need (though not the option) to counterclaim for revocation.

Further details of the reforms can be found in our previous briefings of 29 October 2015 and 16 December 2015.

For more information, or if you need to seek specific legal advice, please contact your usual J A Kemp advisor on +44 (0)20 3077 8600.

 

21 March 2016

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